Douglas Clark

Practice Areas

Arbitration, Intellectual Property, Litigation, Mediation

Professional Memberships

The Law Society of Hong Kong, Fellow, Hong Kong Institute of Arbitrators, Asian Patent Attorneys Association, International Trademark Association

Publications

Books

Intellectual property in Hong Kong, (2nd ed), LexisNexis, 2022

Intellectual property law in China, (2nd ed), Wolters Kluwer, 2021 (co-author)

Patent litigation in China, (2nd ed) Oxford University Press, 2015

Civil litigation in Hong Kong (6th ed), 2022

Gunboat Justice: British and American Law Courts in China and Japan, 1842 – 1943, Earnshaw Books, 2015 – A legal history of extraterritoriality in China and Japan.

Articles and other contributions

Hong Kong Civil Procedure (“White Book”), co-author of commentary on Competition Tribunal Rules and procedural provisions of Competition Ordinance (with Knut Fournier)(2021)

Bullen, Leake and Jacobs, Precedents and Pleadings – Hong Kong, co-author of chapters on patents, copyright, trade marks, registered designs, confidential information and passing off.(2020)

“After Unwired Planet: Why it’s now over to China’s courts to set global FRAND rates”, IAM, 26 September 2020

“Private But Not Confidential: The Impact of the PJS case in Hong Kong”, Hong Kong Lawyer, September 2016

Career

Doug is a partner in the Disputes Resolution practice focusing on Mainland China and Hong Kong intellectual property disputes and arbitration.He was based in Hong Kong from 1993 to 2000 before practising for 11 years in Shanghai and then returning to Hong Kong to practice as a barrister. In 2021 he re-qualified as a solicitor and regularly appears in the higher Hong Kong courts as a solicitor advocate. He also as sits as an arbitrator or appears as counsel in arbitrations and is a Deputy Chairman of the Hong Kong Inland Revenue Board of Review.

In his career, Doug has handled the entire range of contentious IP cases including running complex multi-jurisdictional patent litigation (often in relation to standard essential patents); acting as arbitrator or counsel in numerous patent and high technology arbitrations; establishing new law in relation to anti- circumvention technologies; and numerous high value trademark and passing off cases. He has also obtained interim injunctions in relation to infringement of all types of IP rights including multiple Anton Piller orders and Mareva injunctions. Early in his career he handled numerous anti-counterfeiting cases in Mainland China and attended raids on hundreds of factories and warehouses.

Doug’s non-contentious IP experience includes negotiation and advising on technology transfer contracts; conducting patent and other intellectual property audits; and, freedom to operate analyses. He has also given expert evidence on Mainland Chinese and Hong Kong law in overseas court proceedings or international arbitrations.

Doug began his career in Hong Kong in 1993 with international law firm, Lovells. In 2000, he moved to Shanghai where he first worked on secondment with a Chinese firm and, in 2003, he established and was Managing Partner of Lovells’ Shanghai office for 7 years. In 2011 he returned to Hong Kong to practice as a barrister and in 2020 joined IP boutique Rouse as Global Head of Dispute Resolution. In that role he supervised multiple litigation matters in the Mainland of China.

Doug is the author of four legal texts: Patent Litigation in China, Intellectual Property in China, Hong Kong Intellectual Property and Civil Litigation in Hong Kong and numerous articles on intellectual property. He has also written a three volume history of extraterritoriality in China and Japan, Gunboat Justice.

Doug studied on exchange at high school in Kobe, Japan and on an Australian/Chinese government scholarship at Fudan University, Shanghai, China. He speaks, reads and write, both Japanese and Chinese.